Strategies for International Patent Protection

25 March 2010

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Typically, an inventor or their employer will file a patent application in their home country. This tends to be convenient as it allows the inventor to talk directly with their patent attorney while preparing and filing the application – and it can also be a legal requirement in some countries. A patent application should be filed before publicly disclosing your invention to avoid loss of rights.

But what if I also want to file the patent application abroad?

Currently over 170 countries or multinational regions are contracting parties to the Paris Convention. The Paris Convention provides that at any time up to one year after the date of filing your first patent application, you can file it again with any of these contracting countries or regions and they will honour the original filing date. So for example if you file a patent application in the UK on 1 May 2010 as the first application for the invention and then file the same application in China on 1 May 2011 claiming priority from the UK application, the Chinese application can have an effective filing date of 1 May 2010. As not all countries are party to the Paris Convention, you are advised to contact your usual D Young & Co advisor for details of current member countries prior to publicly disclosing your invention.

Assuming that you are only interested in countries that are party to the Paris Convention, this gives you up to one year to decide where you want to file your application overseas. D Young & Co attorneys can arrange to file your patent application in your selected countries across the globe.

What if I want more time, or I want a very broad portfolio?

One option is to make use of the Patent Cooperation Treaty (PCT). Currently over 140 countries or multinational regions, including all the major economies of the world, are contracting parties to the PCT. The PCT allows an applicant to file one PCT application (up to a year after their first filing) that designates all of these parties. The World Intellectual Property Organisation (WIPO) then conducts a search and examination process for this single PCT application. The process takes 30 months from the date of the first filing, so providing provisional protection almost worldwide for two years with just a single overseas application [see Note 1].

At the end of the two-year period, you have a good idea of the health of your patent application due to the search and examination reports from WIPO, and you have also had two years to develop the market for your invention. This puts you in a strong position to decide where in the world you want the PCT application to proceed further. For the same reason, the PCT system allows you to delay the costs associated with filing multiple patent applications around the world.

For example you may wish to proceed in the US, China, Japan and Europe. Approximately two and a half years from the date of the first filing, you can choose to pursue the application in these countries/regions, and the PCT application is passed to the relevant patent offices. These then evaluate the WIPO reports and each patent office continues the application process until the application is granted as a patent in each country, or in the case of Europe, in a set of countries.

Accordingly, if you are interested in countries or regions that are parties to the PCT, and you want to delay making your decisions in respect of specific countries or regions by even more than a year, it is possible to consolidate potential overseas applications as a single PCT application.

Europe provides another example of a consolidated patent application process. Currently 36 European countries are contracting parties of the European Patent Convention, representing 500 million people and four of the G8 economies. In this case, the European Patent Office (EPO) has the power to grant a patent that has individual legal effect in as many of the 36 countries that you want. You can file a European application within one year of your first filing using the Paris Convention, or you can select a European application at the end of the PCT process. Alternatively, in certain circumstances you can file a European application as your first application, if you are a resident or national of one of the contracting parties.

How much flexibility do I have during these international procedures?

If you choose a PCT application, then at any time you can initiate the application in one or more individual contracting countries/regions, whilst retaining the PCT application for all the other countries/regions. For example, if you suspect that a competitor is infringing your invention in Europe, it is possible to immediately begin proceedings at the EPO to accelerate the process of obtaining your patent, whilst retaining your broad options elsewhere around the world with the co-pending PCT application.

Summary

In summary, it is possible to file a first patent application and then file applications almost anywhere in the world, either directly or via the PCT, within a year. A PCT application provides the maximum period in which to develop and market your invention before committing to applications in multiple countries and regions around the world, but at the same time provides the flexibility to react quickly to local changes in circumstance.

Notes:

Under certain circumstances, some countries permit claiming damages for infringement back to the time of publication of the application. This provisional protection may require translation into a local language if “back-damages” are to be claimed.

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